By Matthias Wolf and Klemens Stratmann

German legislators have decided at very short notice to introduce some substantial amendments to the German Patent Act and other laws, effective as of 1 July 2006, which we would like to present.

1. Changes in Opposition Proceedings and Elimination of Division of a Patent

1.1. Jurisdiction

The Transition Regulation of Sec. 147(3) German Patent Act, under which the German Federal Patent Court was to rule on oppositions to German granted patents instead of the (previously competent) German Patent and Trademark Office (GPTO), was in force from 1 January 2002 through 30 June 2006. This Regulation has now been revoked. From 1 July 2006, it is the GPTO again that decides in the first instance. As a legal remedy, the decisions of the GPTO can be appealed before the Federal Patent Court.

1.2. Oral Hearing

Under the regulation which was in force prior to 1 January 2002, it was at the discretion of the Patent Division of the GPTO to grant a hearing requested in the opposition proceedings (which was normally not the case). From 1 July 2006, a request for a hearing made by a party to the proceedings is binding.

Another formal amendment is that, when issuing a summons for a hearing, the Patent Division will point out the issues it believes will need to be discussed. This brings the German procedure closer to the European opposition proceedings (cf. Rule 71(a) EPC).

1.3. Elimination of the Possibility of Dividing a Patent

Pursuant to Sec. 60 German Patent Act, it was thus far possible to declare the division of a patent in the opposition proceedings, i.e. after the patent had been granted. This is no longer possible due to the elimination, without substitution, of Sec. 60 German Patent Act as of 1 July 2006.

Legislators justify this substantial amendment in that the possibility of dividing a patent has not proven to be successful in practice. The case law of the Federal Supreme Court of Germany used to allow the proprietor of a patent to resort to the entire disclosure of the application when filing a divisional application. Until recently, a division made in the opposition proceedings could thus result in an application (and a patent resulting therefrom) whose scope of protection would extend beyond the scope of protection of the contested patent. It was furthermore possible to delay the completion of the opposition proceedings by dividing a patent shortly before an expected decision. The cancellation of Sec. 60 German Patent Act puts an end to these legal uncertainties and possibilities for abusing the law.

1.4. Acceleration of Proceedings

Thus far, the parties had no possibility of accelerating the proceedings or forcing a decision, even in the case of lengthy opposition proceedings. This has been remedied by introducing the new Sec. 61(2) German Patent Act. According to Sec. 61(2) German Patent Act, the Appeal Chamber of the Federal Patent Court will decide on the opposition instead of the Patent Division of the GPTO if

  1. this is requested by one party and no other party objects thereto within two months after service of the request, or
  2. upon request of only one party, if a minimum period of 15 months has elapsed since the expiration of the opposition period.

However, this will not apply if the Patent Division serves a decision regarding the opposition or a summons to attend a hearing upon the parties within three months from receipt of the request for decision by the Federal Patent Court.

An official fee of €300 is to be paid when requesting a decision by the Federal Patent Court (see also item 3.2).

2. Legal Remedy in Case of Violation of the Right to be Heard

The possibility of remedy was incorporated in the codes of judicial procedure, such as the German Code of Civil Procedure (in this case, new Sec. 321a of the German Code of Civil Procedure) by the law relating to legal remedies for violation of the right to be heard (Act relating to Complaints about not being Heard) of 9 December 2004. Sec. 321a of the German Code of Civil Procedure was already analogously applicable to procedures before the Federal Patent Court through corresponding references in Sec. 99(1) German Patent Act and Sec. 82(1) German Trademark Act.

However, this regulation was not incorporated in intellectual property laws for proceedings before the Federal Supreme Court, and this has been remedied by the newly introduced Sec. 122a German Patent Act, which is in force since 1 July 2006:

Upon a complaint from the party aggrieved by the decision, the procedure shall be prosecuted if the court has violated such party’s right to be heard in a manner significant for the decision. The complaint may not be brought against a decision preceding this decision. Sec. 321a (2)-(5) of the German Code of Civil Procedure shall apply analogously.

The provisions of Sec. 321a (2) to (5) of the German Code of Civil Procedure stipulate inter alia

  • a time period of two weeks for raising the complaint after gaining knowledge of the violation of the right to be heard, and
  • remedy by continuation of the proceedings if (a) the complaint is founded and (b) continuation is deemed necessary due to the complaint.

An official fee of €50 will have to be paid if the complaint is not successful, i.e. if it is rejected after examination.

3. Amendment of Fees

3.1. Pursuant to the new version of the Patent Costs Act, the official fees applicable will be charged separately to each petitioner in the case of

  • oppositions to granted patents,
  • requests for cancellation of registered utility models, and
  • oppositions, reviews and requests for cancellation in trademark issues.

In this regard, the following is stated in the substantiation of the law:

If, for example, several opponents file a joint opposition at the GPTO, each of them will have to pay a fee of €200.

This new provision contradicts the practice of the European Patent Office (cf. G3/99).

3.2. Under the amended Patent Costs Act, the official fee for a request for decision by the Federal Patent Court pursuant to Sec. 61(2) German Patent Act (see item 1.4 above) and various appeal fees are also to be charged separately to each petitioner.

It thus appears to be the legislators’ intention that an appeal against the (partial) rejection of a joint opposition filed by several opponents should only become effective if the appeal fee has been paid by each opponent. In the case of other groups of petitioners, such as several joint applicants, it remains to be clarified whether several appeal fees will also have to be paid.

Until the practice intended by these amendments to the law has been clarified, it is thus recommended, whenever a joint appeal is filed by a group of petitioners, that one appeal fee be paid per petitioner. We will be happy to provide advice on this matter in specific cases.

3.3. The fee for filing an appeal on a point of law concerning a decision of the Federal Patent Court, which was previously dependent on the value in dispute, has now been converted to a fixed fee of €750.

©Hoffmann - Eitle 2006.

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